Trademark Law Misconceptions

One prominent misconception involving trademark protection is that a trademark could be “reserved” for some indefinite future use. This is wrong. Trademark protection does not exist unless and until the trademark is used in commerce in conjunction with goods and/ or services. A trademark applicant cannot "reserve" a trademark for some indefinite future use. Only by filing under intent-to-use provision can a limited-time reservation occur. This type of trademark application requires a subsequent filing of a declaration of use confirming bona fide use of the trademark. The applicant is granted a six-month period in which to file a declaration of use. The applicant may request extension of this time in additional six-month periods. In no event may the declaration of use be filed later than 36 months after filing of the trademark application – that registration would not be allowed.

2. A Trade Name Confers Upon Itself Registered Trademark Rights

Another common misconception is that reservation of a trade name by a provincial or federal incorporation, and approval as a corporate name, confers upon the trade name registered trademark rights. It does not. Only filing of a formal trademark application with the Trademark Office may secure a properly registered trademark.

3. A Last Name of a Person May be Freely Used as a Trademark

Most people believe that they have an unrestricted right to use their own last name as a trademark for goods and/or services. This is wrong. A person does not have an absolute right to use his or her own surname for commercial purposes. For example, Tom McDonald could not enter the fast food hamburger business and begin selling "McDonald's" hamburgers. Using that name in conjunction with hamburgers is a trademark of the McDonald's Corporation. If Tom McDonald was permitted to sell his "McDonald's" hamburgers, consumers would likely be confused as to the source of "McDonald's" hamburgers. He likely could sell "Tom McDonald's" hamburgers, albeit without the use of the golden arches. However, Tom's brother, Ronald, may find it difficult to do the same.

4. A Trademark Exists for the Benefit of its Owner

The most common misconception about trademarks is that they exist for the benefit of the trademark owner. They do not. They exist for the benefit of the consumer. The purpose of a trademark is to identify the origin of a particular product, so that if one buys a product with the Xerox name on it, he or she knows that a product manufactured by Xerox. Another important point to remember is that while patent and copyright protection has a limited duration, trademarks could exist forever. That is why when trademarks are assigned or sold, they are sold along with the "goodwill" which public opinion associates with them.

5. The Best Trademark is the One That is most Descriptive

A common misconception is that the best trademark is the one that is most descriptive. In fact that is the worst possible trademark. One of the main grounds for the Trademark Office rejection of a trademark registration is that the trademark is merely descriptive. Another and related ground of rejection is that the mark is generic. In other words, a mark that identifies a product by its generic or its descriptive name may accurately identify the product but does nothing to identify the manufacturer or seller. Not surprisingly, the best trademark is one that bears no reasonable relationship to anything.

The theory is that an owner of a trademark creates the value of the trademark. The owner does this by advertising, marketing, and selling a good product. Many people come to our office with what they consider to be a dynamite trademark because it really sets out in the public's mind the nature of the product or service. What these people believe is that the mark will develop the market. They have it exactly in reverse – it is the marketing of the goods and services protected by the trademark that gives value to the trademark. What is surprising is not that so many people have that misconception, because it is perfectly natural, but how many of them refuse to believe when they are advised to get rid of the descriptive or generic mark because it probably will not be able to be registered anyway, and even if it is, it probably would be knocked out somewhere down the line.

Just so the record is clear, the mere fact that there is some description in a mark does not in and of itself mean that the mark is automatically invalid or cannot serve as a trademark. What the mark cannot be is "merely descriptive" or generic. Some degree of description is allowed. The problem is that this always becomes a matter of judgment. Our advice to the client is usually, "Don't spend a lot of money, time and effort trying to convince an examiner to allow a trademark that contains some description if you have not already invested money into that trademark."

6. Trademark Rights Cannot be Lost

Even though a trademark may exist forever, the owner can lose it at any time. The reason a trademark can exist forever is that once a product or service has been identified with a certain mark in the mind of the public, the public has a right to rely on that mark as long as that company is delivering the product or service. On the other hand, if the product name becomes so familiar to the public that it becomes generic, then the owner loses the trademark. An example is the Monopoly game. Because Parker Bros. did not carefully safeguard its trademark on the name "Monopoly," it lost it. The game of Monopoly, according to the judge who tried that case, is now a generic term, and so when people hear the term "Monopoly," they think of a particular type of game, as opposed to a particular company that makes it. Examples of marks that are carefully guarded are Xerox and Kleenex. Even though people commonly refer to copying as xeroxing, you will never hear a lawyer for Xerox making such a statement. The correct term is photocopying on a Xerox brand copier. By the same token, you will never see an advertisement for Kleenex, instead the trademark will be advertised as "Kleenex brand facial tissues."

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